The opponent’s ground of objection under Section 5(2)(b) was based on an earlier application for registration of a similar shaped container as that of the applicant. In associated opposition proceedings the Hearing Officer held that the container mark was not distinctive and that it had not acquired a distinctive character. Opposition by this applicant thus succeeded (BL O/050/04).

In these proceedings, and for the same reasons, the Hearing Officer again held that the opponent’s container shape was not distinctive and went on to compare the device of a container with the mark VITAGEN and device of a similar container; it being common ground that identical and similar goods were at issue. As the dominant and distinctive element in the respective marks was the word VITAGEN the Hearing Officer concluded that there was no likelihood of confusion of the public. Opposition thus failed under Section 5(2)(b).

As regards the objection under Section 5(4)(a) – Passing Off – the Hearing Officer noted that the opponent’s evidence showed that in use, the opponent displays prominently the mark YAKULT on their containers. As the marks VITAGEN and YAKULT are very different there was no likelihood of confusion and opposition on this ground must fail.

The opponent’s objection under Section 3(6) was on the basis that the applicant had no intention of using their mark in respect of the goods claimed. The Hearing Officer examined the evidence filed by the applicant and was satisfied that there was an intention to use the mark in suit in relation to “milk and beverages having a milk base”. There was no evidence in support of other goods in Class 29 such as eggs and dairy products at large nor was there any committed intention to use the mark at issue in relation to goods in Classes 30 and 32. The opposition was thus found to be successful in respect of all goods other than “milk and beverages having a milk base.”